REVISED JUNE 29, 2010
        IN THE UNITED STATES COURT OF APPEALS
                 FOR THE FIFTH CIRCUIT   United States Court of Appeals
                                                                        Fifth Circuit

                                                                      FILED
                                                                     June 2, 2010
                                  No. 09-20702
                                                                     Lyle W. Cayce
                                                                          Clerk
AMAZING SPACES, INC.,

                                            Plaintiff - Appellant
v.

METRO MINI STORAGE; LANDMARK INTEREST CORPORATION,

                                            Defendants - Appellees



                 Appeal from the United States District Court
                      for the Southern District of Texas


Before KING, WIENER, and DENNIS, Circuit Judges.
KING, Circuit Judge:
      Amazing Spaces, Inc., and Metro Mini Storage are rival self-storage
businesses in Houston, Texas. Amazing Spaces brought this action against
Metro and Landmark Interest Corporation, a construction company, alleging
infringement of a star design that it claims as a service mark. The district court
concluded that the design was not a legally protectable mark and dismissed
Amazing Spaces’s claims on summary judgment. We agree that the design was
not legally protectable, and we affirm the judgment dismissing Amazing Spaces’s
service mark infringement claims. However, we also conclude that the district
court erred in dismissing Amazing Spaces’s claims relating to infringement of
                                        No. 09-20702

its trade dress, and we reverse and remand for further proceedings.
                                    I. BACKGROUND
       Amazing Spaces and Metro compete directly with each other in providing
self-storage services in Houston, Texas. Landmark has built facilities for both
Amazing Spaces and Metro.               Amazing Spaces claims, in connection with
providing storage services, exclusive use rights in a design consisting of a raised,
five-pointed star set within a circle (the “Star Symbol”), a copy of which is
attached as an appendix to this opinion.1 Metro uses a similar star design on its
buildings. In response to this use, Amazing Spaces brought suit against Metro
and Landmark in federal district court, alleging federal and state causes of
action.2 With respect to the Star Symbol alone, Amazing Spaces brought a
federal claim for service mark infringement under the Lanham Act and state law
claims for common law infringement and statutory dilution. With respect to its
trade dress, of which the Star Symbol comprises one element, Amazing Spaces
brought federal claims for trade dress infringement under the Lanham Act and
copyright infringement and state law claims for common law unfair competition
and statutory dilution.
       Amazing Spaces was founded in 1998 by Scott and Kathy Tautenhahn,

       1
         The parties and the district court used varying terminology in describing the design
at issue. Amazing Spaces refers to it as the “Star Logo,” Metro refers to it as the “Texas Star,”
and the district court’s opinion refers to it as the “star mark.” Except where alluding to a
different design or quoting from either the parties or the district court, we will employ the term
“Star Symbol.”
       2
         The federal claims are for service mark infringement under § 32 of the Lanham Act,
15 U.S.C. § 1114, trade dress infringement under § 43 of the Lanham Act, 15 U.S.C. § 1125,
and copyright infringement based on trade dress under 17 U.S.C. § 501. The state law claims
are for service mark and trade dress dilution under Texas’s anti-dilution statute, TEX. BUS. &
COM. CODE ANN. § 16.29 (Vernon 2002), common law service mark infringement, and common
law unfair competition relating to trade dress.

                                                2
                                   No. 09-20702

and it currently operates three storage facilities in the greater Houston area.
The facilities opened in 1998, 2001, and 2006, respectively. Landmark was hired
to build each of these facilities and, at Amazing Spaces’s request, installed the
Star Symbol under the peaks of the facilities’ gabled roofs. Amazing Spaces has
used the Star Symbol in its facilities’ architecture and in its advertising, and it
claims to have done so since at least April 1998. One trade magazine has
recognized Amazing Spaces for its storage services, and the magazine displayed
the Star Symbol in connection with the accompanying article. Amazing Spaces
has also used the Star Symbol to designate the locations of its facilities on maps,
and it claims to have directed customers—through telephone advertisements—to
“look for the star.”
      The Star Symbol is registered as a service mark with the United States
Patent and Trademark Office (PTO). Prior to applying for registration, Amazing
Spaces engaged a company to perform a database search to determine whether
other storage companies had registered a similar star mark; the search revealed
no such registrations. Amazing Spaces’s application stated that it believed no
other person or business was entitled to use the Star Symbol or a deceptively
similar design as a mark for storage services. On July 6, 2004, the PTO issued
U.S. Service Mark Registration No. 2,859,845 (the “’845 Registration”) for the
Star Symbol; we have attached the ’845 Registration as an appendix to this
opinion. Amazing Spaces also holds a registration for another design (the “Peaks
and Sky Symbol”) that features a series of roof peaks, including stars on the
gables, placed below a sky expanse, with the words “AMAZING SPACES”
underneath.
      Landmark has also constructed self-storage facilities for Metro; these
facilities feature a similar five-pointed-star-in-a-circle design (but not raised) on

                                         3
                                  No. 09-20702

their gables. Despite Amazing Spaces’s demand that Metro cease its use of a
star, Metro continued to use its design and remodeled existing facilities to
include the design. According to Amazing Spaces, this has caused confusion
among its customers, who mistook Metro’s facilities for new Amazing Spaces
facilities. According to Kathy Tautenhahn, existing or prospective customers
have inquired about whether new Amazing Spaces facilities had opened where
Metro facilities were located. The record also includes a declaration from a
customer to similar effect.
      Prior to this lawsuit, Amazing Spaces had, at one other time, threatened
legal action against a rival self-storage business for using a star design on its
buildings. However, the matter never culminated in a lawsuit: Community Self
Storage removed its star design in response to Amazing Spaces’s demands. In
the present case, Amazing Spaces has submitted a declaration by its alarm
technician that the technician was confused by the appearance of Community’s
facility and believed it to be an Amazing Spaces facility.
      Unlike Community, however, and as mentioned above, Metro refused to
cease using its star design, and Amazing Spaces proceeded to file the lawsuit at
issue. Metro and Landmark each filed an answer, asserting various affirmative
defenses and counterclaims. One of these counterclaims was a request that the
trademark be canceled for invalidity. The district court recognized early on that
“[t]here does seem to be a question about the trademarkability of the Texas star
logo.” Accordingly, the court ordered discovery to proceed in stages, with the
first stage limited to “the threshold issues raised by the ‘trademarkability’ of the
Texas star and similar issues affecting copyright and trade dress.”




                                         4
                                       No. 09-20702

       Following discovery, Metro3 moved for summary judgment on the ground
that the Star Symbol was not a valid service mark. It argued primarily that the
Star Symbol was not inherently distinctive and that Amazing Spaces could not
establish that it had acquired secondary meaning. It supported this contention
by presenting evidence that the same or a similar five-pointed star was used in
commerce “in at least 63 different industries and businesses on buildings,
property, and as part of logos” and on the buildings of “at least 28 other self-
storage locations.” Amazing Spaces, Inc. v. Metro Mini Storage, 

, 738 (S.D. Tex. 2009).4 The court concluded that “[t]he ubiquitous nature of
the five-pointed star set within a circle precludes a finding that it is inherently
distinctive or that it can serve as an indicator of origin for a particular business,”

“the record d[id] not raise a fact issue material to determining
whether the star mark has acquired distinctiveness through a secondary
meaning,” 

       In determining whether the Star Symbol was inherently distinctive, the
district court considered two tests. See 

The first is known as the
Abercrombie test, after Judge Friendly’s opinion in Abercrombie & Fitch Co. v.
Hunting World, Inc., 

(2d Cir. 1976). Under this test, marks are
“classified in categories of generally increasing distinctiveness . . . [:] (1) generic;


       3
         Although Metro and Landmark play distinct roles in Amazing Spaces’s allegations of
infringement, they asserted the same arguments at the summary judgment stage and now
assert the same arguments on appeal. Thus, for ease of reference, unless we note otherwise
or it is made apparent from context, further references in this opinion to Metro extend to
Landmark as well.
       4
         Metro submitted an affidavit from the former owner of one such storage facility
attesting to the use of a raised, five-pointed star within a circle on the storage facility—on
walls and on gables beneath roof peaks—prior to April 1998.

                                              5
                                     No. 09-20702

(2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v.
Taco Cabana, Inc., 

, 768 (1992) (citing 

).
The second test was articulated in Seabrook Foods, Inc. v. Bar–Well Foods Ltd.,

(C.C.P.A. 1978). Under the Seabrook Foods test, courts look to a
set of factors “[i]n determining whether a design is arbitrary or distinctive”:
      [1] whether it was a “common” basic shape or design, [2] whether it
      was unique or unusual in a particular field, [3] whether it was a
      mere refinement of a commonly-adopted and well-known form of
      ornamentation for a particular class of goods viewed by the public
      as a dress or ornamentation for the goods, or [4] whether it was
      capable of creating a commercial impression distinct from the
      accompanying words.5

(footnotes omitted).
      After laying out the two tests, the district court proceeded to consider their
application to the Star Symbol. It first determined that the Star Symbol was not
generic or a common geometric shape. Amazing 

.
It then determined that the Star Symbol was not descriptive of any
“characteristic or quality of self-storage service[s].” 

the same
reason, and because Amazing Spaces disclaimed any argument to the contrary,
the court further concluded that the Star Symbol was not suggestive. 

Abercrombie rubric, this process of elimination left only two possibilities
remaining: the Star Symbol was either arbitrary or fanciful. Both of those
“categories of marks, because their intrinsic nature serves to identify a
particular source of a product, are deemed inherently distinctive and are entitled
to protection.” Two 

. However, the district court refused


      5
       The district court did not discuss the fourth factor, presumably because that factor
contemplates a design accompanied by words. See Amazing 

.

                                            6
                                  No. 09-20702

to reach such a conclusion, stating that “the star mark cannot be classified as
arbitrary or fanciful unless it is inherently distinctive so as to serve as a source
identifier for Amazing Spaces.” Amazing 

.
      The district court then proceeded to assess the inherent distinctiveness of
the Star Symbol under the Seabrook Foods test, inquiring “whether the star
mark is ‘so unique, unusual or unexpected’ in the self-storage industry that ‘one
can assume without proof that it will automatically be perceived by customers
as an indicator of origin.’” 

J. THOMAS MCCARTHY, MCCARTHY ON
TRADEMARKS     AND   UNFAIR COMPETITION § 8:13, at 8–58.5 (4th ed. 2002)
(hereinafter “MCCARTHY ON TRADEMARKS”)). Responding to the parties’ dispute
over which Houston-area self-storage company first used a star design, the court
determined that “[r]egardless of whether Amazing Spaces was the first self-
storage business to use the star mark—at least in the Houston area—the mark
is not inherently distinctive and does not act as an indicator of origin for any
self-storage business, including Amazing Spaces.” 

The court reached
this conclusion based on the fact that “[a] five-pointed star set within a circle is
a common symbol long associated with Texas” and was used by numerous
businesses, including self-storage businesses. 

the district court,
“[t]he ubiquitous nature of the five-pointed star set within a circle precludes a
finding that it is inherently distinctive or that it can serve as an indicator of
origin for a particular business.” 

that the Star Symbol was not inherently distinctive, the
district court next examined whether the summary judgment record raised a fact
issue regarding secondary meaning. See 

The court noted that the
inquiry was primarily an empirical one, with survey evidence providing the best


                                         7
                                       No. 09-20702

evidence and other evidence—such as length and manner of the mark’s use,
nature and extent of advertising and promotion of the mark, sales volume,
actual confusion, and the defendant’s intent—also bearing on the matter. 

The district court found that no fact issue had been raised regarding
secondary meaning because Amazing Spaces had not submitted any survey
evidence, the advertising primarily involved a different design of which the Star
Symbol was only a minor part, and the evidence of actual confusion involved the
Star Symbol only in conjunction with architectural similarities in the buildings.

       Final judgment was entered by separate order on September 28, 2009.
That judgment explained, “For the reasons stated in this court’s Memorandum
and Opinion entered this date, this action is dismissed with prejudice.” The
judgment had the effect of dismissing Amazing Spaces’s entire case and did not
differentiate the claims based on the Star Symbol from those based on its trade
dress, of which the Star Symbol is merely one element. On October 19, Amazing
Spaces filed a notice of appeal from the district court’s judgment dismissing its
action with prejudice.6



       6
          There was some confusion relating to Amazing Spaces’s notice of appeal, but we
discern no jurisdictional difficulties with proceeding on this case. On October 9, 2009, Metro
moved before the district court for further relief, requesting an order canceling the ’845
Registration. This was necessary because the district court had denied the motion for
summary judgment on Metro’s affirmative defenses and counterclaims as moot. See 

Ten days later, Amazing Spaces filed its notice of appeal. On November 17, Metro moved
before this court for an order directing the district court to correct its judgment under Rule
60(a) of the Federal Rules of Civil Procedure and cancel the ’845 Registration. We denied that
motion on December 21. On appeal, neither party asserts that the district court’s judgment
was not a final judgment, and we do not construe Metro’s motion as undermining the
effectiveness, under Rule 4(a)(4)(A) of the Federal Rules of Appellate Procedure, of Amazing
Spaces’s notice of appeal.

                                              8
                                  No. 09-20702

                        II. STANDARD OF REVIEW
      “We review a district court’s grant of summary judgment de novo.” Bd. of
Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co.
(Smack Apparel), 

, 474 (5th Cir. 2008) (citing Noble Energy, Inc. v.
Bituminous Cas. Co., 

, 645 (5th Cir. 2008)), cert. denied, 

(2009). Summary “judgment . . . should be rendered if the pleadings, the
discovery and disclosure materials on file, and any affidavits show that there is
no genuine issue as to any material fact and that the movant is entitled to
judgment as a matter of law.” FED. R. CIV. P. 56(c)(2). “‘We are obliged to
construe all the evidence and reasonable inferences deduced therefrom in a light
most favorable to . . . the nonmoving party in the court below.’” Xtreme Lashes,
LLC v. Xtended Beauty, Inc., 

, 226 (5th Cir. 2009) (alteration
omitted) (quoting Int’l Shortstop, Inc. v. Rally’s, Inc., 

, 1260 (5th
Cir. 1991)).
      [A]t the summary judgment stage the judge’s function is not himself
      to weigh the evidence and determine the truth of the matter but to
      determine whether there is a genuine issue for trial. . . . [T]here is
      no issue for trial unless there is sufficient evidence favoring the
      nonmoving party for a jury to return a verdict for that party.
Anderson v. Liberty Lobby, Inc., 

, 249 (1986). “[T]he burden on the
moving party may be discharged by ‘showing’—that is, pointing out to the
district court—that there is an absence of evidence to support the nonmoving
party’s case.” Celotex Corp. v. Catrett, 

, 325 (1986).
      When the moving party has carried its burden under Rule 56(c), its
      opponent must do more than simply show that there is some
      metaphysical doubt as to the material facts. In the language of the
      Rule, the nonmoving party must come forward with specific facts
      showing that there is a genuine issue for trial.

                                        9
                                  No. 09-20702

Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 

, 586–87 (1986)
(citations, footnote, emphasis, and quotation marks omitted).
      Whether a mark is inherently distinctive and whether it has acquired
secondary meaning are questions of fact. Pebble Beach Co. v. Tour 18 I Ltd., 

, 537 (5th Cir. 1998), abrogated on other grounds by TrafFix Devices,
Inc. v. Marketing Displays, Inc., 

(2001). Nevertheless, “summary
judgment may be upheld if the summary judgment record compels the
conclusion that the movant is entitled to judgment as a matter of law.” Smack

(citing Beef/Eater Rests., Inc. v. James Burrough Ltd.,

, 639 (5th Cir. 1968)).
      A district court’s grant of summary judgment may be affirmed “based on
any rationale presented to the district court for consideration and supported by
facts uncontroverted in the summary judgment record.” Terrebonne Parish Sch.
Bd. v. Mobil Oil Corp., 

, 887 (5th Cir. 2002) (citing Williams v. Int’l
Bhd. of Elec. Workers (In re Williams), 

, 462 (5th Cir. 2002); Grenier
v. Med. Eng’g Corp., 

, 207 (5th Cir. 2001)); accord Conkling v.
Turner, 

, 1296 n.9 (5th Cir. 1994) (“This court may affirm a grant
of summary judgment on any appropriate ground that was raised to the district
court and upon which both parties had the opportunity to introduce evidence.”
(citing cases)).
                              III. DISCUSSION
      In reviewing the parties’ dispute over whether summary judgment was
proper in this case, we first consider the issue addressed by the district court’s
opinion below—whether the Star Symbol is legally protectable as a service mark.
We then evaluate whether summary judgment was appropriately granted on


                                        10
                                        No. 09-20702

Amazing Spaces’s trade dress claims as well.
A.     The Star Symbol
       Trademark and service mark infringement claims are governed by the
Trademark Act of 1946 (Lanham Act), 15 U.S.C. §§ 1051 et seq.7 There are two
elements to a successful infringement claim under the Lanham Act.8 Smack


       7
          We note that Amazing Spaces brought claims under the Lanham Act and Texas law.
The analysis with respect to Amazing Spaces’s claims under the Lanham Act will be dispositive
of its corresponding claims under Texas law as well. “A trademark infringement and unfair
competition action under Texas common law presents essentially ‘no difference in issues than
those under federal trademark infringement actions.’” Horseshoe Bay Resort Sales Co. v. Lake
Lyndon B. Johnson Improvement Corp., 

, 806 n.3 (Tex. App.—Austin 2001, pet.
denied) (quoting Zapata Corp. v. Zapata Trading Int’l, Inc., 

, 47 (Tex.
App.—Houston [14th Dist.] 1992, no writ)). Nor does Amazing Spaces suggest that the
analysis under the Lanham Act will not also dispose of its service mark dilution claim under
the Texas anti-dilution statute. In any event, the arguments on appeal are framed solely in
terms of federal law, and we address them accordingly. See AmBrit, Inc. v. Kraft, Inc., 

, 1535 n.6 (11th Cir. 1986) (analyzing only federal Lanham Act claims where the
district court and the parties had not separately addressed the plaintiff’s state law claims).
       8
        Amazing Spaces has asserted claims for infringement of its registered Star Symbol
and its unregistered trade dress. The Lanham Act provides separate causes of action for
infringement of a registered mark and an unregistered mark. The relevant portion of § 32,
dealing with registered marks, provides:
       Any person who shall, without the consent of the registrant—
              (a) use in commerce any reproduction, counterfeit, copy, or colorable
              imitation of a registered mark in connection with the sale, offering for
              sale, distribution, or advertising of any goods or services on or in
              connection with which such use is likely to cause confusion, or to cause
              mistake, or to deceive; or
              (b) reproduce, counterfeit, copy, or colorably imitate a registered mark
              and apply such reproduction, counterfeit, copy, or colorable imitation to
              labels, signs, prints, packages, wrappers, receptacles or advertisements
              intended to be used in commerce upon or in connection with the sale,
              offering for sale, distribution, or advertising of goods or services on or in
              connection with which such use is likely to cause confusion, or to cause
              mistake, or to deceive,
       shall be liable in a civil action by the registrant for the remedies hereinafter

                                               11
                                        No. 09-20702

. The plaintiff must first “establish ownership in a
legally protectible mark, and second, . . . show infringement by demonstrating
a likelihood of confusion.” 

Rice, Inc. v. Producers Rice Mill, Inc.,

, 329 (5th Cir. 2008)); accord Paulsson Geophysical Servs., Inc. v.
Sigmar, 

, 309 (5th Cir. 2008) (per curiam) (“To succeed in a
trademark infringement claim, a party must first show that it has a protectable
right in the mark and, second, show that there is a likelihood of confusion
between the marks.” (citing Security Ctr., Ltd. v. First Nat’l Security Ctrs., 

, 1298 (5th Cir. 1985))). The district court’s opinion granting summary
judgment dealt solely with the threshold inquiry regarding whether the Star


       provided.
Lanham Act § 32, 15 U.S.C. § 1114(1). The Lanham Act provides a cause of action for
infringement of an unregistered mark in § 43(a):
       Any person who, on or in connection with any goods or services, or any container
       for goods, uses in commerce any word, term, name, symbol, or device, or any
       combination thereof, or any false designation of origin, false or misleading
       description of fact, or false or misleading representation of fact, which—
              (A) is likely to cause confusion, or to cause mistake, or to deceive as to
              the affiliation, connection, or association of such person with another
              person, or as to the origin, sponsorship, or approval of his or her goods,
              services, or commercial activities by another person, or
              (B) in commercial advertising or promotion, misrepresents the nature,
              characteristics, qualities, or geographic origin of his or her or another
              person's goods, services, or commercial activities,
       shall be liable in a civil action by any person who believes that he or she is or is
       likely to be damaged by such act.
Lanham Act § 43(a)(1), 15 U.S.C. § 1125(a)(1). Although the Lanham Act separately
establishes these causes of action, “[t]he same tests apply to both trademarks and trade dress
to determine whether they are protectible and whether they have been infringed, regardless
of whether they are registered or unregistered.” Pebble 

(citing Two

–70, 773–74; Sunbeam Prods., Inc. v. W. Bend Co., 

, 251
n.4 (5th Cir. 1997), abrogated on other grounds by TrafFix Devices, 

).

                                               12
                                           No. 09-20702

Symbol was legally protectable as a mark and pretermitted discussing the
likelihood of confusion element.
       In reviewing whether the Star Symbol qualifies for protection as a mark,
we begin with the definitions provided by the Lanham Act. Section 45 of the
Lanham Act9 separately defines “trademark” and “service mark,” but the terms
essentially include:
       any word, name, symbol, or device, or any combination thereof . . .
       used by a person . . . to identify and distinguish his or her goods [or
       services] . . . from those manufactured or sold [or provided] by others
       and to indicate the source of the goods [or services], even if that
       source is unknown.10

       9
         We note that the Lanham Act has been substantially revised since its passage in 1946.
Our citations of provisions of the Lanham Act are meant to refer to the provisions currently
in force and not to the statute’s original text.
       10
            The complete definition of the term “trademark” in § 45 provides:
       The term “trademark” includes any word, name, symbol, or device, or any
       combination thereof—
                (1) used by a person, or
                (2) which a person has a bona fide intention to use in commerce and
                applies to register on the principal register established by this chapter,
       to identify and distinguish his or her goods, including a unique product, from
       those manufactured or sold by others and to indicate the source of the goods,
       even if that source is unknown.
Lanham Act § 45, 15 U.S.C. § 1127. The complete definition of a “service mark” provides:
       The term “service mark” means any word, name, symbol, or device, or any
       combination thereof—
                (1) used by a person, or
                (2) which a person has a bona fide intention to use in commerce and
                applies to register on the principal register established by this chapter,
       to identify and distinguish the services of one person, including a unique service,
       from the services of others and to indicate the source of the services, even if that
       source is unknown. Titles, character names, and other distinctive features of

                                               13
                                      No. 09-20702

Lanham Act § 45, 15 U.S.C. § 1127; accord Two 

(“In order
to be registered [and thus legally protectable], a mark must be capable of
distinguishing the applicant’s goods from those of others.” (citing Lanham Act
§ 2, 15 U.S.C. § 1052)). “To be protectable, a mark must be distinctive . . . .” Am.

; accord RESTATEMENT § 13 cmt. a, at 105 (“[A] designation
is protectable as a trademark . . . only if the designation is ‘distinctive.’”); 1
MCCARTHY ON TRADEMARKS § 3:1, at 3–3 (“In determining what can qualify as
a trademark, it is crucial that the symbol in question be so distinctive that it is
capable of performing the function of identifying and distinguishing the goods
that bear the symbol.”).
       [A] mark can be distinctive in one of two ways. First, a mark is
       inherently distinctive if its intrinsic nature serves to identify a
       particular source. . . . Second, a mark has acquired distinctiveness,
       even if it is not inherently distinctive, if it has developed secondary
       meaning, which occurs when, in the minds of the public, the
       primary significance of a mark is to identify the source of the
       product rather than the product itself.
Wal–Mart Stores, Inc. v. Samara Bros., Inc., 

, 210–11 (2000)
(citations, alterations, and quotation marks omitted); accord RESTATEMENT § 13,


       radio or television programs may be registered as service marks
       notwithstanding that they, or the programs, may advertise the goods of the
       sponsor.

and service marks are separately defined, their definitions under the
Lanham Act closely track each other, and the cases construing the two terms inform our
analysis equally. See Union Nat’l Bank of Tex., Laredo, Tex. v. Union Nat’l Bank of Tex.,
Austin, Tex., 

, 841 n.2 (5th Cir. 1990); RESTATEMENT (THIRD) OF UNFAIR
COMPETITION § 9 cmt. f, at 82 (1995) (hereinafter “RESTATEMENT”) (“The substantive rules
applicable to both types of marks are fundamentally identical, however, and the term
‘trademark’ is generally understood to include marks used in the marketing of either goods or
services.”); 1 MCCARTHY ON TRADEMARKS § 4:14, at 4–16 (“For all practical purposes, both
trademarks and service marks are subject to the same substantive rules of validity and
infringement.”).

                                             14
                                    No. 09-20702

at 104–05 (“A word, name, symbol, device, or other designation . . . is ‘distinctive’
. . . if: (a) the designation is ‘inherently distinctive,’ . . . or (b) the designation,
although not ‘inherently distinctive,’ has . . . acquired distinctiveness . . . [,]
commonly referred to as ‘secondary meaning.’”). Registration of a mark with the
PTO constitutes prima facie evidence of the mark’s validity and the registrant’s
exclusive right to use the registered mark in commerce with respect to the
specified goods or services. Lanham Act §§ 7(b) & 33(a), 15 U.S.C. §§ 1057(b) &
1115(a); Elvis Presley Enters. v. Capece, 

, 194 (5th Cir. 1998) (citing
Lanham Act § 33(a), 15 U.S.C. § 1115(a)).
      Amazing Spaces claims that the Star Symbol is sufficiently distinctive to
warrant protection as a service mark. The requisite distinctiveness, it claims,
is shown in three distinct manners: (1) the statutory presumption of validity
flowing from the ’845 Registration; (2) the Star Symbol’s inherent
distinctiveness; and (3) evidence that the Star Symbol has acquired secondary
meaning. In response, Metro rejects each claimed source of distinctiveness and
further requests that we order cancellation of the ’845 Registration. We address
each argument in turn.
      1.     Statutory Presumption of Validity
      As mentioned above, proof of the registration of a mark with the PTO
constitutes prima facie evidence that the mark is valid and that the registrant
has the exclusive right to use the registered mark in commerce with respect to
the specified goods or services. Lanham Act §§ 7(b) & 33(a), 15 U.S.C. §§ 1057(b)
& 1115(a); Elvis Presley 

(citing Lanham Act § 33(a), 15
U.S.C. § 1115(a)). This presumption of validity may be rebutted by establishing
that the mark is not inherently distinctive. See Vision Ctr. v. Opticks, Inc., 596


                                          15
                                       No. 09-20702

F.2d 111, 119 (5th Cir. 1979) (“Although a statutory presumption of validity is
accorded to marks registered under the Lanham Act, this presumption is
rebuttable and may be overcome by establishing the generic or descriptive
nature of the mark.” (citations omitted)); Xtreme 

(noting
that, registration notwithstanding, “if the mark is found to be either generic or
descriptive and lacking secondary meaning, a court may cancel it” (citing 15
U.S.C. § 1119; Soweco, Inc. v. Shell Oil Co., 

, 1184 (5th Cir.
1980))). The parties disagree over the effect to be accorded the presumption of
validity. According to Amazing Spaces, summary judgment was inappropriate
in light of the existence of the presumption. In contrast, Metro’s response urges
that, “given the ubiquitous use of the Texas Star, the presumption has
disappeared entirely from the case.”
       The Fourth Circuit has, in three cases, addressed the effect of the
presumption of validity accorded registered trademarks. In America Online, Inc.
v. AT&T Corp., the court was confronted with an argument that it should accord
Chevron deference11 to the PTO’s decision to register a mark:
             Although we have observed that a district court should not
       freely substitute its opinion for that of the PTO, this observation
       was not made because the PTO was entitled to deference, but rather
       because its decision to register a mark, without requiring evidence
       of secondary meaning, was powerful evidence that the registered
       mark [was inherently distinctive].
       ....


       11
          The doctrine of Chevron deference refers to the Supreme Court’s decision in Chevron,
U.S.A., Inc. v. Natural Resources Defense Council, Inc., 

(1984). “Under the
familiar Chevron framework, we defer to an agency’s reasonable interpretation of a statute it
is charged with administering.” Cuomo v. Clearing House Ass’n, L.L.C., 

, 2715
(2009) (citing Chevron, 

).

                                             16
                                      No. 09-20702

      The prima facie evidence provided by the certificate of registration
      was in this case sufficient to establish a question of material fact
      that could not be resolved on summary judgment. As the
      Committee Note to Federal Rule of Evidence 301[12] (dealing with
      presumptions) states, a presumption does not vanish upon the
      introduction of contradicting evidence . . . ; instead it is merely
      deemed sufficient evidence of the fact presumed, to be considered by
      the jury or other finder of fact. Although evidence rebutting the
      presumption may neutralize the presumption itself—i.e., that the
      burden of proof on the fact giving rise to the presumption has been
      met without rebutting evidence—it does not eliminate from the case
      the evidence itself that gave rise to the presumption. Thus, through
      the certificate of registration, the Commissioner introduces his
      opinion that the application of the registrant was sufficient to
      demonstrate a valid mark.

, 817–18 (4th Cir. 2001) (citations, alterations, and quotation marks
omitted).      The America Online court then noted that, in addition to the
registration, other evidence tended to create a factual dispute, and it concluded
that summary judgment had been improperly granted. 

      Two later cases addressed whether the America Online decision foreclosed
summary judgment in any case where the validity of a registered mark was
challenged. One case suggested that summary judgment was indeed precluded:
“The prima facie evidence provided by the certificate of registration is generally
sufficient to establish a question of material fact that cannot be resolved on


      12
           Rule 301 provides:
      In all civil actions and proceedings not otherwise provided for by Act of Congress
      or by these rules, a presumption imposes on the party against whom it is
      directed the burden of going forward with evidence to rebut or meet the
      presumption, but does not shift to such party the burden of proof in the sense
      of the risk of nonpersuasion, which remains throughout the trial upon the party
      on whom it was originally cast.
FED. R. EVID. 301.

                                             17
                                   No. 09-20702

summary judgment.” U.S. Search, LLC v. U.S. Search.Com Inc., 

,
524 (4th Cir. 2002) (citing Am. 

). In a later case, the
court clarified its approach when confronted with the “argument that [a]
certificate of registration alone creates an issue of fact . . . and thereby precludes
summary judgment.” Retail Servs. Inc. v. Freebies Publ’g, 

, 542 (4th
Cir. 2004). The Retail Services court discussed the burden-shifting effect of the
presumption:
            The presumption of validity flowing from trademark
      registration . . . has a burden-shifting effect, requiring the party
      challenging a registered mark to produce sufficient evidence to
      establish that the mark is [non-distinctive] by a preponderance of
      evidence. The burden shifted by the presumption is one of
      production rather than persuasion. If sufficient evidence of [non-
      distinctiveness] is produced to rebut the presumption, the
      presumption is “neutralized” and essentially drops from the case,
      although the evidence giving rise to the presumption remains.

(citations and alterations omitted). The court then expressly
rejected the contention “that the issuance of a certificate of registration is, by
itself, sufficient to create a jury issue on the validity of the mark in question
because it embodies the PTO’s informed opinion that the mark is registrable,”

and it affirmed the district court’s grant of summary judgment in
light of the “one-sided evidence . . . rebut[ting] the presumption” in that case, 

      The approach that the Fourth Circuit has taken regarding the
presumption of validity is consistent with our precedent. See Vision 

–20 (“Opticks has argued persuasively, not merely with equal force,
that the partnership’s name is [not inherently distinctive]. The weight of these
arguments is more than sufficient to rebut the prima facie presumption that the

                                         18
                                  No. 09-20702

name is [inherently distinctive].” (citations omitted)). Other circuits are in
general agreement. See Tie Tech, Inc. v. Kinedyne Corp., 

, 783–84
(9th Cir. 2002) (“Under Tie Tech’s theory . . . , a defendant in a trademark
infringement action could never prevail at the summary judgment stage on an
invalidity defense because the registration itself would always raise a material
issue of fact.   This approach not only inflates the evidentiary value of a
trademark registration, but ignores situations where [validity] can be
determined as a matter of law based on undisputed facts.”); Door Sys., Inc. v.
Pro–Line Door Sys., Inc., 

, 172 (7th Cir. 1996) (“The presumption of
validity . . . evaporates as soon as evidence of invalidity is presented. Its only
function is to incite such evidence, and when the function has been performed
the presumption drops out of the case.” (citations omitted)); see also ITC Ltd. v.
Punchgini, Inc., 

, 148 (2d Cir. 2007) (“The significance of a
presumption . . . is to shift the burden of production to the mark owner to come
forward with evidence . . . . The ultimate burden of persuasion . . . , however,
remains at all times with the alleged infringer.”); A.C. Aukerman Co. v. R.L.
Chaides Constr. Co., 

, 1037 (Fed. Cir. 1992) (“[A] presumption is
not merely rebuttable but completely vanishes upon the introduction of evidence
sufficient to support a finding of the nonexistence of the presumed fact.”). As a
result, Metro’s introduction of evidence that the Star Symbol is not distinctive
has reduced the presumption of validity to evidence that the PTO is of the
opinion that the Star Symbol is sufficiently distinctive to be legally protectable
as a mark.
      2.     Inherent Distinctiveness
      As mentioned above, “a mark is inherently distinctive if ‘its intrinsic


                                       19
                                   No. 09-20702

nature serves to identify a particular source.’” Wal–Mart 

(alteration omitted) (quoting Two 

).                 Inherent
distinctiveness is attributable to a mark when the mark “almost automatically
tells a customer that it refers to a brand and . . . immediately signal[s] a brand
or a product source.” 

(alterations and internal quotation marks
omitted) (quoting Qualitex Co. v. Jacobson Prods. Co., 

, 162–63
(1995)). The parties disagree over not only the answer to whether the Star
Symbol is inherently distinctive but also over the proper method for conducting
the inquiry. Metro urges that the familiar Abercrombie test cannot be used to
categorize the Star Symbol and instead asks that we apply the Seabrook Foods
test to determine that the Star Symbol is not inherently distinctive. Amazing
Spaces, by contrast, presses the application of the Abercrombie test, under which
it claims the Star Symbol is inherently distinctive, and it argues alternatively
that the Star Symbol is inherently distinctive under the Seabrook Foods test.
             a.    Abercrombie
      In Abercrombie, Judge Friendly sought to arrange the universe of marks
into a spectrum of distinctiveness. 

. As the Supreme Court has
noted, “[m]arks are often classified in categories of generally increasing
distinctiveness; following the classic formulation set out by Judge Friendly, they
may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.”
Two 

(citing 

); accord Xtreme

(noting that “[m]arks are normally assigned” to these
categories). Under this scheme, “‘[t]he latter three categories of marks, because
their intrinsic nature serves to identify a particular source of a product, are
deemed inherently distinctive and are entitled to protection,’” Xtreme Lashes,


                                         20
                                  No. 

(quoting Two 

), while “[g]eneric terms
receive no trademark protection, [and] descriptive terms merit protection only
if they have secondary meaning,” 

).
      We agree with Metro that the Star Symbol resists categorization under the
Abercrombie test, and we consequently do not rely on a rote application of its
categories in determining whether the Star Symbol is inherently distinctive.
The Supreme Court’s most recent recitation of the Abercrombie categories noted
its use only in the context of marks consisting of words. See Wal–Mart 

(“In the context of word marks, courts have applied the now-
classic test originally formulated by Judge Friendly . . . .” (emphasis added)
(citing 

–11)). The Court’s precedent also supports
the proposition that some marks, although deserving of legal protection, do not
fit within the Abercrombie spectrum. In Qualitex, the Court declined to apply
the Abercrombie test to a mark consisting purely of a shade of color used in a
product’s trade dress, holding that the mark could constitute a legally
protectable mark only through a showing of secondary 

–63. The Court further extended that logic when, in Wal–Mart Stores, it
stated that “[i]t seems to us that [product] design, like color, is not inherently
distinctive” and held that marks consisting of a product’s design were
protectable only upon proof of secondary meaning—a conclusion it could not
have reached had it applied the Abercrombie test. Wal–Mart 

. Professor McCarthy, a luminary in the field of trademark law, has likewise
suggested that the Abercrombie test may not apply to all marks, stating that
“[u]se of the spectrum of descriptive, suggestive, arbitrary and fanciful is largely
confined to word marks. It is usually not suitable for nonword designations such


                                        21
                                  No. 09-20702

as shapes and images . . . [, which] must be judged by other guidelines.” 2
MCCARTHY ON TRADEMARKS § 11:2, at 11–7. The RESTATEMENT, in a section
addressed to symbols, graphic designs, and colors, agrees:
             A symbol or graphic design is not inherently distinctive unless
      the nature of the designation and the manner of its use make it
      likely that prospective purchasers will perceive the designation as
      an indication of source. Commonplace symbols and designs are not
      inherently distinctive since their appearance on numerous products
      makes it unlikely that consumers will view them as distinctive of
      the goods or services of a particular seller. Thus, unless the symbol
      or design is striking, unusual, or otherwise likely to differentiate the
      products of a particular producer, the designation is not inherently
      distinctive.
RESTATEMENT § 13 cmt. d, at 107.
      As the district court discovered, the challenge of placing the Star Symbol
into Abercrombie’s constellation of categories is a futile endeavor. We have
described the Abercrombie categories as follows:
            A generic term is the name of a particular genus or class of
      which an individual article or service is but a member. A generic
      term connotes the basic nature of articles or services rather than the
      more individualized characteristics of a particular product. . . . Such
      terms as aspirin and cellophane have been held generic and
      therefore unprotectable as trademarks.
             A descriptive term identifies a characteristic or quality of an
      article or service, such as its color, odor, function, dimensions, or
      ingredients. . . . Examples of descriptive marks would include Alo
      with reference to products containing gel of the aloe vera plant and
      Vision Center in reference to a business offering optical goods and
      services. . . .
            A suggestive term suggests, rather than describes, some
      particular characteristic of the goods or services to which it applies
      and requires the consumer to exercise the imagination in order to
      draw a conclusion as to the nature of the goods and services. . . .

                                        22
                                  No. 09-20702

      The term Coppertone has been held suggestive in regard to sun
      tanning products.
            Arbitrary or fanciful terms bear no relationship to the
      products or services to which they are applied. . . . The term Kodak
      is properly classified as a fanciful term for photographic supplies;
      Ivory is an arbitrary term as applied to soap.
Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 

, 790–91 (5th Cir.
1983) (citations and quotation marks omitted), abrogated on other grounds by
KB Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 

(2004).
A mark’s placement on this spectrum determines whether and how it is entitled
to legal protection. Marks that are suggestive, arbitrary, or fanciful, “because
their intrinsic nature serves to identify a particular source of a product, are
deemed inherently distinctive and are entitled to protection.” Two 

. In contrast, descriptive marks may be protected upon a showing of
acquired or secondary meaning, while generic marks may never acquire
secondary meaning and are categorically excluded from protection. 

      The district court briefly probed the utility of applying the Abercrombie
test and concluded that the Star Symbol did not fit as a generic, descriptive, or
suggestive mark. See Amazing 

. The district
court first rejected the notion that the Star Symbol was generic because “[a] five-
pointed star within a circle does not refer to a product or service provided by a
self-storage company” and “[t]he evidence of widespread use of a five-point star
or a five-point star set within a circle by many diverse businesses and
government offices supports the conclusion that the star mark is not related to
or a generic symbol for self-storage goods or services.” 

determined
that the Star Symbol was not descriptive because “[i]t does not identify a

                                        23
                                  No. 09-20702

characteristic or quality of self-storage service, such as its function or quality.”

the Star Symbol suggestive, according to the district court, because
“[t]here is no basis to conclude that a five-pointed star set within a circle
suggests an attribute of self-storage services.” 

no flaws in the
district court’s analysis with respect to these three categories. However, the
logical extension of the district court’s analysis is the conclusion that the Star
Symbol is arbitrary or fanciful, which under the Abercrombie test would render
it inherently distinctive and thus entitled to protection. Yet the district court
refused to so conclude, stating that “the star mark cannot be classified as
arbitrary or fanciful unless it is inherently distinctive so as to serve as a source
identifier for Amazing Spaces.” 

turned to the Seabrook Foods test in
conducting its inquiry into the Star Symbol’s inherent distinctiveness. See 

that the Star Symbol—indeed, any mark—lacks inherent
distinctiveness if its intrinsic nature does not serve to identify its source. See
Wal–Mart 

(“[A] mark is inherently distinctive if ‘its
intrinsic nature serves to identify a particular source.’” (alteration omitted)
(quoting Two 

)).        Furthermore, as we have already
indicated, we approve the district court’s decision to apply a test other than
Abercrombie in this case. However, we disagree somewhat with the district
court’s reasoning that a mark cannot be categorized as arbitrary or fanciful
unless it is inherently distinctive.     Under the Abercrombie test, it is the
categorization of a mark that dictates its inherent distinctiveness, not the other
way around. A rote application of the Abercrombie test yields the conclusion
that the Star Symbol is an arbitrary or fanciful mark because it “‘bear[s] no
relationship to the products or services to which [it is] applied.’” Pebble Beach,


                                        24
                                      No. 

(quoting 

).13 Were we to apply the
Abercrombie test mechanically to the Star Symbol, without an eye to the
question the test seeks to answer, we would be left with the conclusion that the
Star Symbol is inherently distinctive. The district court, aware of that result,
proceeded to apply the Seabrook Foods test. See Amazing Spaces, 

at 737.
       Both the Supreme Court and scholars have questioned the applicability of
the Abercrombie test to marks other than words. See Wal–Mart 

–13 (noting that the Abercrombie test was developed and applied “[i]n the
context of word marks” and declining to apply it to a mark consisting of product
design); 

–63 (referring to the Abercrombie test but not
applying it to a mark consisting of a shade of color); RESTATEMENT § 13 cmt. d,
at 107 (“[U]nless the symbol or design is striking, unusual, or otherwise likely
to differentiate the products of a particular producer, the designation is not


       13
          One commentator has noted that marks consisting of symbols and designs are
typically arbitrary with respect to their associated goods and services where the marks are
“nonrepresentational”:
              Nonverbal and nonrepresentational designs and figures are perfectly
       acceptable as trademarks. Indeed, they have the advantage of being totally
       arbitrary, and so cannot be descriptive of the goods or services. The only
       problem which may be encountered is the question of whether such designs or
       figures are regarded by the public as identifying indicia or merely as
       decorations. Especially is this true of such simple figures as rectangles,
       diamonds, circles, triangles, or lines.
LOUIS ALTMAN & MALLA POLLACK, 3 CALLMAN ON UNFAIR COMPETITION, TRADEMARKS AND
MONOPOLIES § 18:24 (4th ed. 2010) (footnotes omitted). Under this reasoning, nonverbal
marks—even though “arbitrary”—must still be shown to serve as identifying indicia. Professor
McCarthy appears to share the view that such marks are arbitrary when they are
nonrepresentational. See 1 MCCARTHY ON TRADEMARKS § 7:36, at 7–91 (“A picture that is
merely a representation of the goods themselves is regarded as merely descriptive of the
goods.”).

                                            25
                                     No. 09-20702

inherently distinctive.”); 1 MCCARTHY       ON   TRADEMARKS § 7:33, at 7–88.1–89
(“Ordinary geometric shapes . . . are regarded as nondistinctive and protectable
only upon proof of secondary meaning. . . . However, uncommon or unusual
shapes and symbols . . . can be regarded as inherently distinctive . . . . The issue
is whether this shape is so unusual for this type of goods or services that its
distinctiveness can be assumed.”); 1 MCCARTHY             ON   TRADEMARKS § 8:13, at
8–58.1 (“Only in some cases does [Abercrombie] classification make sense [for
trade dress]. . . . The word spectrum of marks simply does not translate into the
world of shapes and images.”); 2 MCCARTHY           ON   TRADEMARKS § 11:2, at 11–7
(“Use of the spectrum of descriptive, suggestive, arbitrary and fanciful is largely
confined to word marks. It is usually not suitable for nonword designations such
as shapes and images making up trade dress.”). We do not go so far as to hold
that the Abercrombie test is eclipsed every time a mark other than a word is at
issue.     Instead, we hold that the Abercrombie test fails to illuminate the
fundamental inquiry in this case: whether the Star Symbol’s “‘intrinsic nature
serves to identify’” Amazing Spaces and its storage services. Wal–Mart 

(quoting Two 

). For the answer to that
question, we now turn to the Seabrook Foods test employed by the district court.
               b.    Seabrook Foods
         In contrast to the Abercrombie test, the Seabrook Foods test, articulated
by the U.S. Court of Customs and Patent Appeals in 1977, applies expressly to
marks consisting of symbols and designs:
                In determining whether a design is arbitrary or distinctive
         this court has looked to [1] whether it was a “common” basic shape
         or design, [2] whether it was unique or unusual in a particular field,
         [3] whether it was a mere refinement of a commonly-adopted and
         well-known form of ornamentation for a particular class of goods

                                          26
                                         No. 09-20702

       viewed by the public as a dress or ornamentation for the goods, or
       [4] whether it was capable of creating a commercial impression
       distinct from the accompanying words.
Seabrook 

(footnotes omitted).14 The first three of the
Seabrook Foods “‘questions are merely different ways to ask whether the design,
shape or combination of elements is so unique, unusual or unexpected in this
market that one can assume without proof that it will automatically be perceived
by customers as an indicator of origin—a trademark.’” I.P. Lund Trading ApS
v. Kohler Co., 

, 40 (1st Cir. 1998) (quoting 1 MCCARTHY                             ON

TRADEMARKS § 8:13, at 8–58.5).15              As is true of the Abercrombie test, the
Seabrook Foods test seeks an answer to the question whether a mark’s “‘intrinsic
nature serves to identify a particular source.’” Wal–Mart 

(quoting Two 

); accord 1 MCCARTHY ON TRADEMARKS § 3:3,
at 3–6 (“[A] designation must be proven to perform the job of identification: to
identify one source and distinguish it from other sources. If it does not do this,

       14
         As noted above, the district court omitted discussion of the fourth factor, which by its
terms applies only when a party seeks trademark protection for a background design typically
accompanied by words. See Amazing 

. Similarly, we will not
consider the fourth Seabrook Foods factor.
       15
            The Second Circuit has also used a related test that asks “whether [the mark] is
‘likely to serve primarily as a designator of origin of the product.’” Knitwaves, Inc. v. Lollytogs
Ltd., 

, 1008 (2d Cir. 1995) (quoting Duraco Prods., Inc. v. Joy Plastic Enters., 

, 1449 (3d Cir. 1994)). Although the Knitwaves court quoted the Duraco Products
court for part of its test, it rejected the requirements that the product configuration “be
‘unusual and memorable’ and ‘conceptually separable from the product.’” 

n.6
(quoting Duraco 

); see also Stuart Hall Co. v. Ampad Corp., 

,
787–88 (8th Cir. 1995) (rejecting the Duraco Products test as inconsistent with Two Pesos by
imposing additional, non-statutory requirements). The First Circuit has, in turn, criticized the
Knitwaves test as inconsistent with Two Pesos because it fails to keep the inherent
distinctiveness inquiry separate from the secondary meaning inquiry. See I.P. Lund 

. This case does not require us to delve into the propriety of these variations on
the Seabrook Foods test, and we do not do so.

                                               27
                                       No. 09-20702

then it is not protectable as a trademark, service mark, trade dress or any
similar exclusive right.”).16
       We agree with the assessment of the I.P. Lund Trading court and
Professor McCarthy that the Seabrook Foods factors are variations on a theme
rather than discrete inquiries. In Star Industries v. Bacardi & Co., the Second
Circuit noted that “‘[c]ommon basic shapes’ or letters are, as a matter of law, not
inherently distinctive . . . , [but] stylized shapes or letters may qualify, provided
the design is not commonplace but rather unique or unusual in the relevant
market.” 

, 382 (2d Cir. 2005) (citing Seabrook 

; Permatex Co. v. Cal. Tube Prods., Inc., 175 U.S.P.Q. 764, 766 (T.T.A.B.
1972)). This statement, turning on whether the symbol or design is “common,”
comprises, essentially, the first two Seabrook Foods factors. However, the third
Seabrook Foods factor similarly asks whether a symbol or design is “common”
in the sense that it is likely to be perceived by the public as ornamentation
rather than a mark. See Wiley v. Am. Greetings Corp., 

, 142 (1st
Cir. 1985) (equating a red heart shape on a teddy bear to “an ordinary geometric
shape” because it “carrie[d] no distinctive message of origin to the consumer, . . .
given the heart shape’s widespread use as decoration for any number of products




       16
          We note, of course, that the Wal–Mart Court was urged by the respondent in that case
and by the United States as amicus curiae to adopt the Seabrook Foods test writ large for
product design but declined to do so. 

The Court’s concern was that “[s]uch a
test would rarely provide the basis for summary disposition of an anticompetitive strike suit.”

However, as discussed below, we are of the opinion that the relevant portions of the
Seabrook Foods test do provide a basis for summary disposition in this case. Because we
conclude that the Star Symbol is not inherently distinctive under the Seabrook Foods test, we
do not address whether it constitutes a “reasonably clear test,” 

such that it would
be preferable to the Abercrombie test in the ordinary trademark or service mark dispute.

                                              28
                                       No. 09-20702

put out by many different companies”).17 A “common” symbol or design—lacking
inherent distinctiveness—is the antithesis of a symbol or design that “‘is so
unique, unusual or unexpected in this market that one can assume without proof
that it will automatically be perceived by customers as an indicator of origin—a
trademark.’” I.P. Lund 

(quoting 1 MCCARTHY                          ON

TRADEMARKS § 8:13, at 8–58.5); accord RESTATEMENT § 13 cmt. d, at 107
(“Commonplace symbols and designs are not inherently distinctive since their
appearance on numerous products makes it unlikely that consumers will view
them as distinctive of the goods or services of a particular seller.”).
       The district court determined that the Star Symbol was “not a plain five-
pointed star” but was instead “shaded and set within a circle,” rendering it
“sufficient[ly] styliz[ed]” to be “more than a common geometric shape.” Amazing

. It then proceeded to conclude that the Star
Symbol “[wa]s not inherently distinctive and d[id] not act as an indicator of
origin for any self-storage business, including Amazing Spaces.” 

It
supported this assertion with a discussion of “[t]he ubiquitous nature of the five-
pointed star set within a circle” in Texas, specifically its “use[] as a decoration


       17
         The interrelationship between these inquiries is also reflected in Professor McCarthy’s
discussion of common geometric shapes:
       Most common geometric shapes are regarded as not being inherently distinctive,
       in view of the common use of such shapes in all areas of advertising. Thus, such
       ordinary shapes as circles, ovals, squares, etc., either when used alone or as a
       background for a word mark, cannot function as a separate mark unless (1) the
       shape is likely to create a commercial impression on the buyer separate from the
       word mark or any other indicia and (2) the shape is proven to have secondary
       meaning . . . . The rationale is that such designs have been so widely and
       commonly used as mere decorative graphic elements that the origin-indicating
       ability of such designs has been diminished.
1 MCCARTHY ON TRADEMARKS § 7:29, at 7–73–74 (footnotes omitted).

                                              29
                                         No. 09-20702

or ornamentation on innumerable buildings, signs, roads, and products.” 

concluded that this ubiquity—including use of the same or a similar
star design in 63 businesses and 28 other self-storage locations—“preclude[d] a
finding that [the Star Symbol wa]s inherently distinctive or that it c[ould] serve
as an indicator of origin for a particular business.” 

Star Symbol is stylized relative to an unshaded five-
pointed star design not set within a circle. However, we disagree that the issue
of stylization revolves around comparing a design’s actual appearance to its
corresponding platonic form. Instead, as discussed above, asking whether a
shape is stylized is merely another way of asking whether the design is
“commonplace” or “unique or unusual in the relevant market,” Star 

(citing Permatex, 175 U.S.P.Q. at 766), or whether it is “a mere
refinement of a commonly-adopted and well-known form of ornamentation for
a particular class of goods viewed by the public as a dress or ornamentation,”
Seabrook 

.18                 The stylization inquiry is properly

       18
           The parties dispute the scope of the “relevant market”—specifically, whether the
district court correctly considered use of a similar or identical star design beyond the
self-storage service industry. Amazing Spaces contends that we should limit our analysis to
the self-storage services industry, while Metro argues that we may take into account uses of
star designs in a larger context. The second Seabrook Foods factor refers to uniqueness or
unusualness “in a particular 

, and the Second Circuit has stated that
a stylized design may be protectable when it “is not commonplace but rather unique or unusual
in the relevant market,” Star 

. Similarly, the third factor refers to
whether a mark is commonly used as ornamentation for a “particular class of goods.” Seabrook

. In contrast, the First Circuit, in considering whether a red heart on
the chest of a teddy bear was inherently distinctive, appeared to consider the broader use of
red hearts in determining whether the use at issue was unique or unusual. See 

(“[T]he record contains so many examples of use of a red heart motif on teddy bears
and other stuffed animals, not to mention all manner of other toys and paraphernalia, that no
reasonable argument on this point can be made.” (emphasis added)). The rule in the
RESTATEMENT asks whether, “because of the nature of the designation and the context in which
it is used, prospective purchasers are likely to perceive it as a designation that . . . identifies

                                               30
                                        No. 09-20702

conceived of as asking whether a particular symbol or design is stylized such
that prospective purchasers of goods or services are likely to differentiate it from
other, similar symbols or designs.19 See 

(holding that a
red heart on a teddy bear “carrie[d] no distinctive message of origin to the
consumer . . . given the heart shape’s widespread use as decoration for any
number of products put out by many different companies”); Brooks Shoe Mfg. Co.
v. Suave Shoe Corp., 

, 858 (11th Cir. 1983) (holding that a design
consisting of a “V,” “7,” or arrow on athletic shoes was common ornamentation
such that it was not inherently distinctive); RESTATEMENT § 13 cmt. d, at 107


goods or services produced or sponsored by a particular person.” RESTATEMENT § 13(a), at 104
(emphasis added). It further explains that
       [c]ommonplace symbols and designs are not inherently distinctive since their
       appearance on numerous products makes it unlikely that consumers will view
       them as distinctive of the goods or services of a particular seller. Thus, unless
       the symbol or design is striking, unusual, or otherwise likely to differentiate the
       products of a particular producer, the designation is not inherently distinctive.

cmt. d, at 107. Finally, and most importantly, the Lanham Act defines “service mark”
as a mark used “to identify and distinguish the services of one person . . . from the services of
others and to indicate the source of the services.” Lanham Act § 45, 15 U.S.C. § 1127. Because
a mark must distinguish one person’s services from another, we agree that our inquiry is
whether the Star Symbol identifies and distinguishes Amazing Spaces’s self-storage services
from others’ self-storage services. This does not mean, however, that we must blind ourselves
to uses beyond the self-storage services industry: the fact that the same or a similar star is
used in countless other ways certainly bears on whether it is “likely that prospective
purchasers will perceive [a given star design] as an indication of source” within a particular
industry because a “[c]ommonplace symbol[’]s . . . appearance on numerous products makes
it unlikely that consumers will view [it] as distinctive of the goods or services of a particular
seller.” RESTATEMENT § 13 cmt. d, at 107.
       19
          Under this analysis, use by third parties of a design bears on whether the design is
inherently distinctive, not merely whether the design “is a ‘strong’ or a ‘weak’ []mark.” Exxon
Corp. v. Tex. Motor Exchange of Houston, Inc., 

, 504 (5th Cir. 1980); cf. Union
Nat’l Bank of Tex., Laredo, 

n.25 (noting that widespread industry use can
render a mark not inherently distinctive, but third-party use otherwise typically affects the
issue of whether there is a likelihood of confusion between marks).

                                              31
                                        No. 09-20702

(“The manner in which a symbol or design is used is also relevant to the
likelihood that it will be perceived as an indication of source. In some instances
a design is likely to be viewed as mere ornamentation rather than as a symbol
of identification.”); 1 MCCARTHY ON TRADEMARKS § 3.3, at 3–11 (“Usually, if when
viewed in context, it is not immediately obvious that a certain designation is
being used as an indication of origin, then it probably is not. In that case, it is
not a trademark.”). The record evidence is replete with similar or identical five-
pointed stars, both raised and set in circles, and used in similar manners, such
that—notwithstanding the residual evidence of the presumption of validity—no
reasonable jury could find that the Star Symbol is even a mere refinement of this
commonly adopted and well-known form of ornamentation.20 The Star Symbol
is thus not “‘so unique, unusual or unexpected in this market that one can
assume without proof that it will automatically be perceived by customers as an
indicator of origin—a trademark,’” I.P. Lund 

(quoting
1 MCCARTHY       ON   TRADEMARKS § 8:13, at 8–58.5), and it “does not almost
automatically tell a customer that it refers to a brand . . . [or] immediately signal
a brand or a product source,” Wal–Mart 

(alterations and


       20
         This is what differentiates the Star Symbol from the examples of registered marks
containing stars that Amazing Spaces cites to support the protectability of five-pointed stars.
The Dallas Cowboys star is stylized through the inclusion of a white border. The star in the
Wal–Mart registration is a plain, five-pointed star, but the registered mark consists of more
than just the star—the mark is the words “Wal” and “Mart” on either side of the star. The
LanChile Airlines star is set against a circle that is 50% filled in, and it is adjacent to the
words “LanChile Airlines.” Finally, the USA Truck mark is a complex design consisting of a
white star within a blue circle, set against a white rectangle with blue borders and a red stripe
running across the middle. Each of these marks contains elements distinguishing it from the
commonplace stars in the record. See Union Nat’l Bank of Tex., Laredo, 

n.25 (noting that the appropriate inquiry is whether the mark as a whole is protectable, not
whether its component parts are individually protectable (citing Estate of P.D. Beckwith v.
Comm’r of Patents, 

(1919))).

                                               32
                                       No. 09-20702

internal quotation marks omitted). Because the Star Symbol does not, by “‘its
intrinsic nature[,] serve[] to identify a particular source,’” 

it is not
inherently distinctive, and it can be protected only upon a showing of secondary
meaning.
       3.     Secondary Meaning
       The parties disagree over whether the Star Symbol has acquired
distinctiveness through secondary meaning. “Secondary meaning occurs when,
in the minds of the public, the primary significance of a mark is to identify the
source of the product rather than the product itself.” Smack 

(alteration and internal quotation marks omitted) (quoting Wal–Mart

).21
              Secondary meaning is used generally to indicate that a mark
       or dress has come through use to be uniquely associated with a
       specific source. To establish secondary meaning, a manufacturer
       must show that, in the minds of the public, the primary significance
       of a product feature or term is to identify the source of the product
       rather than the product itself.
Two 

n.4 (citations and quotation marks omitted); accord
Smack 

(“A mark has acquired secondary meaning when
it ‘has come through use to be uniquely associated with a specific source.’”
(quoting Pebble 

)). “The inquiry is one of the public’s
mental association between the mark and the alleged mark holder.” Smack

(citing Sno–Wizard Mfg., Inc. v. Eisemann Prods. Co.,


       21
          The Wal–Mart Stores Court noted that the term “secondary meaning” “is often a
misnomer in th[e] context [of nonword marks], since nonword marks ordinarily have no
‘primary’ 

n.*. The Court suggested that a clearer description of the
concept would use the term “acquired meaning,” but the Court followed “the conventional
terminology” of “secondary meaning.” 

it as well.

                                             33
                                     No. 09-20702

, 427 (5th Cir. 1986)). “Because the primary element of secondary
meaning is a mental association in buyer[s’] minds between the alleged mark
and a single source of the product, the determination whether a mark or dress
has acquired secondary meaning is primarily an empirical inquiry.” Sunbeam

(emphasis and internal quotation marks omitted)
(quoting Sicilia Di R. Biebow & Co. v. Cox, 

, 425 n.4 (5th Cir. 1984),
abrogated on other grounds by TrafFix Devices, 

).
      In the context of trade dress, we have articulated seven factors to consider
in determining whether secondary meaning has been shown:
      “(1) length and manner of use of the mark or trade dress, (2) volume
      of sales, (3) amount and manner of advertising, (4) nature of use of
      the mark or trade dress in newspapers and magazines, (5)
      consumer-survey evidence, (6) direct consumer testimony, and (7)
      the defendant’s intent in copying the trade dress.”
Smack 

(quoting Pebble 

).22 “In
considering this evidence, the focus is on how it demonstrates that the meaning
of the mark or trade dress has been altered in the minds of consumers.” Pebble

(citing 

); accord 

(“‘[T]he question is not the extent of promotional efforts, but their
effectiveness in altering the meaning of the term to the consuming public.’”
(alteration omitted) (quoting Aloe Creme Labs., Inc. v. Milsan, Inc., 

,
850 (5th Cir. 1970))). We have consistently expressed a preference for “an
objective survey of the public’s perception of” the mark at issue. Vision 

; accord Sno–Wizard 

(“‘The authorities are in



      22
        We recognize that these factors may apply with varying force depending on whether
the mark is a service mark or whether it consists of a symbol or design.

                                           34
                                   No. 09-20702

agreement that survey evidence is the most direct and persuasive way of
establishing secondary meaning.’” (quoting 

)).
      The district court considered the following evidence that Amazing Spaces
claimed raise a fact issue regarding secondary meaning: (1) the Star Symbol was
used for ten years; (2) Amazing Spaces had spent nearly $725,000 in advertising
and promoting the Star Symbol; (3) Amazing Spaces had realized over $11.5
million in revenue since it first began using the Star Symbol; (4) Kathy
Tautenhahn’s statement in her declaration that the Star Symbol identifies
Amazing Spaces’s self-storage services; and (5) declarations of a customer and
an alarm technician about confusion when seeing rival self-storage facilities
(Metro and Community) that displayed symbols similar to the Star Symbol. See
Amazing Spaces, 

at 740. The district court concluded that no
fact issue was raised. 

It based this conclusion partly on the absence
of survey evidence, 

but primarily on its determination that the
remaining evidence was not probative regarding secondary meaning: the
advertisements did not prominently display the Star Symbol but instead
prominently featured the Peaks and Sky Symbol, and the declarations described
confusion only in reference to the overall architecture of the facilities, 

      We agree with the district court that no fact issue has been raised
regarding the existence of secondary meaning. As we discussed above, Amazing
Spaces’s use of the Star Symbol has been primarily decorative and ornamental.
Moreover, the record discloses that the Star Symbol was almost invariably used
not as a stand-alone mark but was rather, as Amazing Spaces states in its brief,
“an integral part of several marks that Amazing Spaces uses—indeed it is the
one common element across its non-word marks.” While this argument might


                                         35
                                     No. 09-20702

support secondary meaning as to those other marks, it does not support
secondary meaning as to the Star Symbol. Cf. Taco Cabana Int’l, Inc. v. Two
Pesos, Inc., 

, 1120 (5th Cir. 1991) (“[C]ompetitors may use
individual elements in Taco Cabana’s trade dress, but the law protects the
distinctive totality.”), aff’d, 

. This logic extends to the advertising
present in the record. While the Star Symbol (or a variation thereof) constitutes
a minor piece of the Peaks and Sky Symbol, marks Amazing Spaces’s locations
on a map, or replaces the bullet in a bulleted list, it is virtually absent as a
stand-alone mark from Amazing Spaces’s advertising in the record.                   This
predominant advertising use belies the force Amazing Spaces would attribute
to its telephonic advertising directing customers to “look for the star.” Nor does
Amazing Spaces’s volume of sales—to the extent that it applies to a service mark
rather than a trademark, trade dress, or product design—reveal secondary
meaning: the advertising attempted to attract customers using marks other than
the Star Symbol.
      We also agree with the district court’s assessment that the two
declarations evidencing consumer confusion do not bear on the secondary
meaning of the Star Symbol. Shane Flores averred that he was confused by the
appearance of a Metro facility’s “use of a star logo in conjunction with the
similarity in the architectural features and designs” and believed it to be an
Amazing Spaces facility. Glen Gilmore averred similarly with respect to a
Community facility. While these instances of confusion may bear on Amazing
Spaces’s trade dress claims,23 they do not have relevance as to the secondary


      23
        We discuss Amazing Spaces’s trade dress claims below, but we express no opinion on
the weight the declarations should be accorded in resolving those claims.

                                           36
                                    No. 09-20702

meaning of the Star Symbol itself.24           Amazing Spaces also claims that
intentional copying has been shown because Metro constructed a facility that
incorporated a star design after this lawsuit had been filed. But this chronology
does not bear on whether Metro’s use of a common design was intentional
copying of Amazing Spaces’s design. Amazing Spaces also contends that the
district court placed undue emphasis on the lack of a survey. We have already
noted this court’s preference for survey evidence as proof of secondary meaning,
and we also note that the other factors do not weigh in Amazing Spaces’s favor.
As Professor McCarthy has stated, “in a borderline case where it is not at all
obvious that [a] designation has been used as a mark, survey evidence may be
necessary to prove trademark perception.” 1 MCCARTHY ON TRADEMARKS § 3.3,
at 3–8.
      In conclusion, we agree with the district court’s assessment that Amazing
Spaces has failed to raise a fact issue regarding the existence of secondary
meaning with respect to the Star Symbol. In light of the overwhelming evidence
that the Star Symbol is not distinctive, we hold that it does not serve “to identify
and distinguish the services of” Amazing Spaces. Lanham Act § 45, 15 U.S.C.
§ 1127.
      4.     Cancellation of the ’845 Registration
      At the conclusion of its brief, Metro argues that because the Star Symbol
“is incapable of serving as a trademark,” we should “cancel the registration
pursuant to 15 U.S.C. § 1119.” Section 37 of the Lanham Act provides that “[i]n
any action involving a registered mark the court may . . . order the cancelation


      24
         This is also true with respect to Kathy Tautenhahn’s declaration, in which she
averred that managers had reported inquiries about whether Amazing Spaces had facilities
where Metro facilities were located.

                                          37
                                  No. 09-20702

of registrations, in whole or in part . . . .” Lanham Act § 37, 15 U.S.C. § 1119;
accord Xtreme 

. We may not, however, order cancellation
of the Star Symbol in this appeal. “[T]his circuit follows the general rule that,
in the absence of a cross-appeal, an appellate court has no jurisdiction to modify
a judgment so as to enlarge the rights of the appellee or diminish the rights of
the appellant.” Borrego Springs Bank, N.A. v. Skuna River Lumber, L.L.C. (In
re Skuna River Lumber, L.L.C.), 

, 356 (5th Cir. 2009) (citing Morley
Constr. Co. v. Md. Cas. Co., 

(1937); Kelly v. Foti, 

, 822
(5th Cir. 1996)). The district court’s judgment dismissed Amazing Spaces’s claim
that Metro was infringing its trademark rights in the Star Symbol, and it denied
as moot all of Metro’s affirmative defenses and counterclaims—including a
request that the Star Symbol’s registration be cancelled. See Amazing Spaces,

at 742. We are dubitante that the district court’s grant of
summary judgment rendered the cancellation issue moot, but because Metro has
not cross-appealed that judgment, we are without jurisdiction to award it further
relief by ordering the ’845 Registration canceled. However, as discussed below,
we conclude that the district court erred in dismissing Amazing Spaces’s
remaining claims with prejudice, and we must remand for further proceedings.
The district court is, of course, free to consider Metro’s cancellation request on
remand.
B.    Trade Dress Claims
      Having concluded that the district court correctly held that the Star
Symbol is not protectable as a mark, we next address whether the district court
correctly dismissed Amazing Spaces’s causes of action relating to its trade dress
and facility design. Amazing Spaces asserts that the following causes of action


                                       38
                                  No. 09-20702

were improperly dismissed because they do not “rest entirely on whether the
Star Logo is entitled to trademark protection”: (1) trade dress infringement
under the Lanham Act and Texas common law; (2) copyright infringement; and
(3) trade dress dilution in violation of the Texas anti-dilution statute.
      We “may affirm a grant of summary judgment on any appropriate ground
that was raised to the district court and upon which both parties had the
opportunity to introduce evidence.” 

n.9 (citing cases).
However, these other claims were not yet before the district court, and Amazing
Spaces had not yet had the opportunity to introduce evidence relating to those
claims. We therefore reverse the district court’s judgment insofar as it dismissed
those claims, and we remand for further proceedings. We briefly explain our
decision as to each claim.
      1.    Trade Dress Infringement
      In addition to its claim that Metro had infringed its Star Symbol service
mark, Amazing Spaces also brought claims for trade dress infringement under
§ 43(a) of the Lanham Act and Texas common law. See Blue Bell Bio–Med. v.
Cin–Bad, Inc., 

, 1256 (5th Cir. 1989) (“The Lanham Act creates a
cause of action for trade dress infringement. This action is analogous to the
common law tort of unfair competition.” (citing cases)). “Trade dress refers to
the total image and overall appearance of a product and may include features
such as the size, shape, color, color combinations, textures, graphics, and even
sales techniques that characterize a particular product.” Pebble 

(internal quotation marks omitted) (quoting Sunbeam 

& n.3); accord RESTATEMENT § 16, at 156 (“The design of elements that
constitute the appearance or images of goods or services as presented to


                                       39
                                  No. 09-20702

prospective purchasers, including . . . displays [and] decor, . . . is eligible for
protection as a mark . . . .”). Trade dress protection has been extended to the
overall “motif” of a restaurant, Two 

, and to the layout of
golf holes, Pebble 

. “The purpose of trade dress protection,
like trademark protection, is to ‘secure the owner of the trade dress the goodwill
of his business and to protect the ability of consumers to distinguish among
competing products.’” Eppendorf–Netheler–Hinz GmbH v. Ritter GmbH, 

, 355 (5th Cir. 2002) (alteration omitted) (quoting Two 

).
      Amazing Spaces is correct that, to protect the overall appearance of its
facilities as trade dress, it need not establish that the Star Symbol is legally
protectable. Amazing Spaces’s claimed trade dress, unlike the Star Symbol,
consists of the entirety of the facilities’ design, including placement of the Star
Symbol under the roof peaks. See Taco Cabana 

(“[T]he
existence of [non-distinctive] elements does not eliminate the possibility of
inherent distinctiveness in the trade dress as a whole.”). The district court
limited discovery to the issue of the trademarkability of the Star Symbol, and
Amazing Spaces was therefore unable to present its trade dress and unfair
competition claims. We therefore reverse the dismissal of those claims and
remand for further proceedings.
      2.    Copyright Infringement
      In its complaint, Amazing Spaces also alleged infringement of its
“copyrights in and to the architectural and design features of Amazing Spaces’[s]
storage facilities by its promotion, development, construction of storage facilities
substantially similar to those of Amazing Spaces and by preparing derivative


                                        40
                                  No. 09-20702

works of Amazing Spaces[’s] copyrighted architectural works.” “To establish a
claim for copyright infringement, a plaintiff must prove that: (1) he owns a valid
copyright and (2) the defendant copied constituent elements of the plaintiff’s
work that are original.” Positive Black Talk Inc. v. Cash Money Records Inc., 

, 367 (5th Cir. 2004) (citing Gen. Universal Sys. v. Lee, 

, 141
(5th Cir. 2004) (per curiam); Szabo v. Errisson, 

, 942 (5th Cir. 1995)),
abrogated on other grounds by Reed Elsevier, Inc. v. Muchnick, 

(2010). To demonstrate the second element—copying—“a plaintiff must prove:
(1) factual copying and (2) substantial similarity.” 

v. Array
Sys. Corp., 

, 576 (5th Cir. 2003)). None of these elements is
disposed of in this case by a determination that the Star Symbol is not a valid
mark. The district court did not permit discovery regarding Amazing Spaces’s
copyright claim, and its opinion does not address whether copyright
infringement occurred. We therefore reverse and remand on this claim as well.
      3.    Trade Dress Dilution
      Texas provides a statutory cause of action for dilution of protectable
marks:
      A person may bring an action to enjoin an act likely to injure a
      business reputation or to dilute the distinctive quality of a mark
      registered under this chapter or Title 15, U.S.C., or a mark or trade
      name valid at common law, regardless of whether there is
      competition between the parties or confusion as to the source of
      goods or services. . . .
TEX. BUS. & COM. CODE ANN. § 16.29. Amazing Spaces alleged that Metro’s
actions had the effect of “dilut[ing] and blur[ring] the distinctiveness of Amazing
Spaces’[s] distinctive service mark and trade dress and the goodwill associated
therewith.” While our discussion above disposes of the claim of service mark


                                        41
                                  No. 09-20702

dilution, Amazing Spaces’s trade dress dilution claim has not yet been addressed
by the district court. We therefore reverse and remand on that aspect of
Amazing Spaces’s dilution cause of action as well.
                              IV. CONCLUSION
      The Star Symbol is not inherently distinctive, and Amazing Spaces has not
raised a genuine issue of material fact regarding secondary meaning. The Star
Symbol is thus not legally protectable as a mark, and we accordingly AFFIRM
the district court’s judgment dismissing Amazing Spaces’s claim for service mark
infringement. However, whether the Star Symbol is legally protectable as a
mark is not dispositive of Amazing Spaces’s remaining federal claims for trade
dress and copyright infringement or its state claims for common law trade dress
infringement and statutory trade dress dilution. We therefore REVERSE the
district court’s judgment insofar as it dismissed those claims, and we REMAND
for further proceedings. On remand, the district court is free to consider Metro’s
arguments relating to cancellation of the Star Symbol’s registration in the first
instance.
      AFFIRMED IN PART, REVERSED IN PART, and REMANDED. Each
party shall bear its own costs.




                                       42
No. 09-20702

APPENDIX




    43